Changes Of Ip Law 2009 E

LEGAL UPDATE NEWSLETTER - August 2009

PART I – CONCERNS

REMARKABLE CHANGES BY THE LAW ON AMENDMENT TO A NUMBER OF ARTICLES OF THE LAW ON INTELLECTUAL PROPERTY 2009 By Mr. Nguyen Tuan Khang On 19 June 2009, the National Assembly of Vietnam passed the Law on amendment to a number of articles of the Law on Intellectual Property (Law 2009). Law 2009 will come into effect from 01 January 2010. The following are new changes in comparison with the Law on Intellectual Property of 2005 (Law 2005). 1. Copyright With regard to the types of work protected by copyright, Law 2009 has rectified Law 2005’s shortcomings by protecting more types of works; works such as architecture-related sketches, plans, maps and drawings are now subject to copyright protection. As for architectural works, plastic art works, and computer programs, Law 2009 expands the scope of use rights not requiring permission, royalties or remuneration. Accordingly, Law 2009 does not allow the right to make one copy of the work of an author for personal scientific research or teaching purpose and the right to copy a work by a library for research purpose. Apart from that, instead of restrictions by Law 2009, Law 2009 allows other use rights over such works that do not require permission, royalties, or remuneration, such as: quoting from a work photographing or televising these works when displayed at a public place in order to present images of such works. In addition, Law 2009 provides that any broadcast organisation using published works to make a sponsored broadcast, a broadcast with advertisements, or to collect money in any form, shall not be required to seek permission but

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must pay royalities or remuneration to the copyright holder. Under Law 2005, the rate royalities and remuneration were regualated by the Government, but Law 2009 allows the relevant parties to negotiate and decide royalities or remuneration. In cases where such agreement cannot be reached, the applicable Governmental regulations shall be applied or either party can file such case in the court for settlement in accordce with the law. There are some changes in the term of copyright protection over cinematographic works, photographic works, applied art works and anonymous works (of which the term of copyright protection is not decided based on a lifetime). As stated in Law 2005, the term of protection over such works was 50 years as Page 02/12

LEGAL UPDATE NEWSLETTER - August 2009

from the date of their first publication. As for stage works and cinematographic works, if such works have not yet been published, within the term of 50 years from the date of their formulation, the term of protection was calculated from the date of their formulation. With respect to anonymous works, upon the occurence of its author’s information, under Law 2005 the term of protection of such works was the whole life of the author plus 50 years following his/her death. Under Law 2009, the term of protection of cinematographic works, photographic works and applied art works shall be 75 years as from the date of first publication. If such works have not been published within 25 years from the date of their formulation, the term of protection shall be 100 years, calculated from the date of formulation. As for anonymous works, upon the occurence of its author’s information, the term of protection of such works shall be the whole life of the author plus 50 years after his/her death. Looking from another point of view, Law 2005 only stipulates the State’s ownership over anonymous works. According to Law 2009, anonymous works may be subject to the State’s ownership, or that of organizations or individuals; particlarly, organizations or individuals currently managing anonymous works shall be entitled to copyright ownership rights until the identify of the author is ascertianed.

2. Industrial property rights Compared with Law 2005, Law 2009 creates more requirements for registration of trademarks with geographical names and other signs indicating geographical origin of Vietnam; accordingly, such registration for trademark protection must be approved by the competent State authorities. Law 2009 further clarifies the “first to file” principle. In Law 2005, there is no clear guideline on what to do when one person submits more than one application for the same invention; or registers designs with or not significantly different from each other; or registers several marks that are identical or similar to the extent there might be confusion when they are used for identical or similar products or services. This matter is settled by Law 2009. Accordingly, if several registration applications are submitted by one person in order to register identical marks used for identical products or services, a protection title shall be granted based on the valid application with the earliest priority or filling date among the applications which satisfy all conditions for the grant of a protection title. For the remaining cases, a protection title shall be granted based on the valid application with the earliest priority or filling date among the applications, regardless of one or several applicants. Furthermore, with respect to invention, Law 2005 mentions identical inventions to set out this “first to file” principle, whereas Law 2009 widely provides for both identical inventions and similar inventions. The time limit for processing applications for granting protection certificates is now longer than in the previous regulations, particularly from 12 months to 18 months for inventions, from 6 months to 9 months for marks, and from 6 months to 7 months for industrial designs.

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LEGAL UPDATE NEWSLETTER - August 2009

The right of prior use of inventions and industrial designs has been modified. Previously the time for calculating prior use was the date prior to the publishing of an application for registration of an invention or industrial design (according to Law 2005); it now becomes the date prior to the filing date or priority date (if any) of an application for registration of an invention or industrial design (Law 2009).

only foreign law firms practicing in Vietnam are prohibited from providing these services. Law 2009 also requires more conditions applied to organizations providing intellectual property assessment services and individuals practicing intellectual property assessment. 5. Protection of Intellectual Property rights

3. Plant varieties Law 2005 provides that the subjects of plant varieties protection are plant varieties or harvested materials, whereas Law 2009 states that they are reproductive materials or harvested materials with specific definitions therein. There are some supplemented provisions regarding the organizations and individuals whose rights to plant varieties are eligible for protection. Law 2009 expands the types of organizations and individuals eligible for plant varieties protection to foreign organizations and individuals having headquarters, permanent residential addresses, or with plant varieties manufacturing or trading establishments located in a country which enters into an agreements on the plant varieties protection with Vietnam. Law 2009 further provides conditions for organizations providing the service of representing rights to plant varieties, changes other regulations on plant varieties such as naming plant varieties, the rights of the holder of plant varieties protection certificate, and the extension/limitation/assignment of the rights to plant varieties, etc. 4. Intellectual Property assessment and representing services To protect domestic providers of intellectual property representation, Law 2009 affirms that

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According to Law 2005, administrative penalties shall be applied for acts of intellectual property infringement causing damages to customers or to the community, provided that the holder of the intellectual property rights informs the defaulting party in writing and requests him/her to stop such act. Law 2009 states that administrative penalties may only be applied upon the occurrence of acts of infringement of intellectual property rights which cause damages to the author or the holder of intellectual property rights (or customers or the community); the notification to defaulting party is no longer required. Levels of penalties are also changed. In Law 2005, the lowest level of fine imposed was at least equivalent to the value of goods of which infringement was already discovered; the highest level of fine did not exceed 5 times the value of goods of which infringement was

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LEGAL UPDATE NEWSLETTER - August 2009

already discovered. For consistency among laws, Law 2009 stipulates that the administrative penalties will be implemented in accordance with the common regulations on administrative penalties. As for intellectual property rights protection at borders, the duration of suspension of customs

procedures is changed. Particularly, under Law 2005 this duration was ten working days from the date of issuing the decision and, with the same ten-working-days duration, Law 2009 regulates that this duration is calculated from the date the applicant for such suspension receives a customs suspension notice from the customs authority.